Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 4 and 9 – 10 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With respect to claim 4, Applicant recites that the removing the pressure-resistant layer further comprises….partially or sectionally removing and/or modifying..before AND/OR during the heating.” As written, the amended claim is still unclear. Claim 1 recites that the heating occurs subsequent to applying the pressure-resistant layer to the wear layer, and then the last step is “removing the pressure-resistant layer from the wear layer at least sectionally.” Therefore, as written, it is unclear how the pressure-resistant layer can be removed before heating. Claim 4 contradicts the steps in claim 1. In addition, if applicant intended an embodiment where the layer is removed prior to heating, it does not seem possible therefore that the microspheres upon heating would be limited by the pressure-resistant properties of the pressure-resistant layer because if the layer were removed from the wear layer, there would thus be no pressure-resistant layer to limit the microspheres’ expansion during heating. Based on applicant’s specification, it would appear that claim 4 includes mutually-exclusive species and thus, requires correction. In other words, per applicant’s specification, the “before heating” is an embodiment where the pressure-resistant layer is cut-out or perforated prior to exposure to the heating step and thus, these ‘cut-out’ portions are ‘removed’ before heating; however, the pressure-resistant layer is still exposed to the heating [the only distinction here is that the areas where there are cut-outs, the wear layer beneath is elevated or formed convexly] – please see paragraph 0028 of the instant specification.
With respect to claims 9 – 10, Applicant requires:
“A flexible surface element with at least one expanded wear layer, produced by expansion of hollow microspheres of the surface element against a pressure-resistant layer and subsequent at least partial removal of the pressure-resistant layer; wherein the pressure-resistant layer has cutouts or through-holes.” However, as written, the only required elements of the product (i.e, the flexible surface element) is the “at least one expanded wear layer.” The phrase “produced by expansion of hollow microspheres of the surface element against a pressure-resistant layer and subsequent at least partial removal of the pressure-resistant layer; wherein the pressure-resistant layer has cutouts or through-holes” includes process limitations imparted onto the product. It is unclear as to what the metes and bounds of the claimed product are, what Applicant intends and whether the pressure-resistant layer is part of the final product or not because the layer itself is removed or partially removed. For the purposes of examination, the Examiner is interpreting the final product to be the surface element with the at least one expanded wear layer which includes expanded microspheres therein.
In addition, while it appears applicant has amended claim 9, the amendment fails to correct or make clear, the phrase “subsequent at least partial removal of the pressure-resistant layer.” In other words, it is still unclear whether applicant intends the pressure-resistant layer to be part of the flexible surface element or not. Said another way, the claim does not preclude full removal of the pressure-resistant layer and thus, in that instance, the pressure-resistant layer is not part of the end product.
For the purposes of examination of claim 9, examiner has applied art such that it addresses the pressure-resistant layer as not part of the product as well as prior art that addresses the layer as part of the product and detached or removed after curing of the product.
Claim 11 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As written, claim 11 recites “wherein the expandible hollow microspheres are introduced between a tensile member on a first side of the wear layer and the pressure-resistant layer on a second side of the wear layer opposite the first side.” It is unclear what the metes and bounds of claim 11 are because claim 1 to which claim 11 depends, already recites that the hollow microspheres are introduced into the wear layer [and/or functional layer]. Thus, it is unclear whether claim 1 is to be interpreted as the microspheres are introduced into the functional layer and then, there is an additional tensile member in the layered product. For the purposes of examination, the examiner has mapped the embodiment in figure 2 and/or 3, respectively to the prior art.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 9 – 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hartman, et al. (US 5,476,712). Hartman, et al. teach a flexible surface element (figure 1) with at least one expanded wear layer (item 14 – figure 1), produced by expansion of hollow microspheres of the surface element (item 14a and 14b – figure 1) against a pressure-resistant layer (note that the laminate of Hartman, et al. includes layers 16 and 18 (skin layers) which sandwich a core layer (14).
PNG
media_image1.png
196
436
media_image1.png
Greyscale
Core layer 14 includes a matrix material of voids and cells which comprise expanded gas-containing microspheres (column 4, lines 5 – 10). The examiner (as noted in the 35 USC 112 rejection above) contends that the features of the removal of the pressure resistant layer wherein the layer has holes or cutouts are process limitations imparted on the product itself; however, such features fail to further define the laminate and as such, the examiner contends that Hartman, et al. anticipates the claimed flexible surface element with a wear layer and microspheres therein.
The flexible surface element of Hartman, et al. further includes a functional layer (item 22 -figure 1) and at least one tensile member (item 20 – figure 1). Examiner notes that the functional layer and tensile member are not further defined in the claim by composition or structure and thus, because Hartman, et al. teach additional layers 20 and 22, which are adhesive layers, examiner contends that these layers may function as the functional layer and tensile member, respectively.
Claim(s) 1, 4 – 5, 6, 9 and 11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Traser, et al. (US 2014/0154485 A1).
With respect to claim 1, Traser, et al. teach a method for manufacturing a flexible surface element with at least one thermoplastic, thermosetting and/or elastomeric wear layer, the method comprising: introducing expandable hollow microspheres into the wear layer and/or a functional layer (item 13 – figure 3; paragraph 0166; examiner notes that an acrylic precursor with hollow glass microsphere constitutes the foamed layer 13); applying at least one pressure-resistant layer detachably to the wear layer (item 11 – figure 3; paragraph 0173; examiner notes that release liner is applied and may be removed further downstream, post-curing [see paragraph 0129]; subsequently, heating at least one section of the surface element to be treated by a thermal energy supply to a temperature within an expansion temperature range of the hollow microspheres, so that at least the hollow microspheres contained in the section to be treated are at least partially expanded and/or further expanded, wherein expansion of the hollow microspheres is limited by pressure-resistant properties of the pressure-resistant layer (paragraph 0169; examiner notes that because layer 11 is applied onto layer 13 [into which the microspheres are], any expansion of layer 13 is limited by the contact between it and layer 11].
With respect to claim 4, Traser, et al. teach that the removing of the pressure-resistant layer further comprises partially or sectionally removing after heating (paragraph 0129, examiner notes that the release liner may be subsequently removed post-curing). Examiner notes that claim 4 recites before and/or during heating, examiner contends that the release liner is removed post-curing, but the foam inner layer may not be fully cool and thus, the liner is removed ‘during heating.’
With respect to claim 5, Traser, et al. teach wherein the applying of the at least one pressure-resistant layer comprises several different pressure-resistant layers (examiner notes that in addition to release liner 11, layer 12 and/or layer 5 may be applied and thus, are ‘several different pressure resistant layers.’
With respect to claim 6, because the microspheres naturally expand [or foam] in layer 13, the thickness of such layer is reduced.
With respect to claim 11, Traser, et al. teach the expandible hollow microspheres are introduced between a tensile member (item 5 – figure 3) on a first side of the wear layer (examiner notes that the first side is considered the ‘bottom’ side of the article), and the pressure-resistant layer on a second side (top-side of the article) on a second side of the wear layer opposite the first side.
With respect to claim 9, Traser, et al. teach a flexible surface element comprising at least one expanded wear layer (item 13 – figure 3), produced by expansion of hollow microspheres of the surface element (paragraph 0166) against a pressure-resistant layer (item 11 – figure 3) and subsequent at least partial removal of the pressure-resistant layer (paragraph 0129); a functional layer (item 12 – figure 3), and at least one tensile member (item 5 – figure 3), wherein the at least one expanded wear layer comprising the hollow microspheres absorbs no or only low tensile forces during operation.
Examiner notes that phrase “the at least one expanded wear layer comprising the hollow microspheres absorbs no or only low tensile forces during operation” is a function or property of the wear layer itself and because the wear layer of Traser, et al. comprises foam like that in the instant invention, which expands upon curing, the layer is expected to behave as recited.
Examiner also notes that the reference of Traser, et al. has been applied such that the pressure-resistant layer is part of the article and then subsequently removed. Thus, claim 9 has been interpreted herein in 1) one embodiment with the pressure-resistant layer included and 2) in another embodiment, because the layer or liner is removed, claim 9 has been alternatively interpreted as a final article without the pressure-resistant layer included. In either case, examiner contends claim 9 has been anticipated accordingly.
Claim(s) 1, 6, 9 and 11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Specialty Converters (GB 1,358,932). With respect to claim 1, Specialty Converters teaches teach a method for manufacturing a flexible surface element with at least one thermoplastic, thermosetting and/or elastomeric wear layer, the method comprising: introducing expandable hollow microspheres into the wear layer and/or a functional layer (item 10 – figure 1; page 2, lines 80 – 90); applying at least one pressure-resistant layer detachably to the wear layer (item 13 – figure 1); subsequently, heating at least one section of the surface element to be treated by a thermal energy supply to a temperature within an expansion temperature range of the hollow microspheres, so that at least the hollow microspheres contained in the section to be treated are at least partially expanded and/or further expanded (figure 1; page 2, lines 90 – 110), wherein expansion of the hollow microspheres is limited by pressure-resistant properties of the pressure-resistant layer (examiner notes that expansion of the microspheres is limited by carrier sheet 13 as sheet 13 contacts the layer 10).
With respect to claim 6, Specialty Converters teaches that the material thickness of the wear layer is reduced as a result of the expansion of the hollow microspheres (examiner notes that the portion of the layer closest to the infrared lamps – the skin layer [see figure 1] becomes a denser, reduced thickness portion as the foam expands in the interiorly [see figure 1]).
With respect to claim 11, the reference teaches that the microspheres are introduced between a tensile member (item 11 – figure 1) on a first side of the wear layer (or bottom side as noted in the figure) and the pressure-resistant layer on a second side (or top side of the wear layer opposite the first side.
With respect to claim 9, the reference teaches a flexible surface element comprising at least one expanded wear layer (item 10 – figure 1), produced by expansion of hollow microspheres of the surface element (page 2, liens 90 – 110) against a pressure-resistant layer (item 13 – figure 1) and subsequent at least partial removal of the pressure-resistant layer (page 3, lines 25 – 30); a functional layer (item 17 – figure 1 and 2; ‘skin layer’), and at least one tensile member (item 11 – figure 1 and 2), wherein the at least one expanded wear layer comprising the hollow microspheres absorbs no or only low tensile forces during operation.
Examiner notes that phrase “the at least one expanded wear layer comprising the hollow microspheres absorbs no or only low tensile forces during operation” is a function or property of the wear layer itself and because the wear layer of Specialty Converters comprises foam like that in the instant invention, which expands upon curing, the layer is expected to behave as recited.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 2 – 3 are rejected under 35 U.S.C. 103 as being unpatentable over Traser, et al. in view of Fu, et al. (US 2018/0148246 A1).
Traser, et al. teach the features above, but fail to teach that the pressure-resistant layer comprises polyester and wherein the pressure-resistant layer comprises a biaxially pre-stretched sheet. It is noted however, that the release liner of Traser, et al. is not limited to specific species of polymer. It is further noted that Traser, et al. teach that the release liner provides a predetermined breaking surface, where the films may be easily obtained by peeling along the release surface (paragraph 0126).
Fu, et al. teach a flexible article wherein the pressure-resistant layer or slip layer comprises polyester (paragraph 0076); or wherein the pressure-resistant layer comprises a biaxially pre-stretched sheet (paragraph 0076). The slip layer allows for easy removable or peeling of the layer.
Therefore, the examiner contends that it would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the release liner of Traser, et al. such that it is a polyester film or a stretched sheet for the purpose of providing a breaking surface which is easily removable from the multi-layer stack.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Traser, et al. in view of Nelson (US 7,018,501).
Traser, et al. teach the features as noted above but fail to teach wherein the pressure-resistant layer has holes or cut-outs.
Nelson teaches a see-through panel and its manufacture. A release liner is disposed over an adhesive layer which has a distinct hole pattern. The holes allow pattern transfer, for example, of an ink layer onto a substrate (see figure 3), at which point the release liner is then removed.
Therefore, it would be obvious to one of ordinary skill in the art at the time the invention was filed to perforate the release liner of Traser, et al. for the purpose of allowing the release liner of Traser, et al. to act as a pattern layer, which can transfer such pattern onto the wear layer below.
Claim(s) 7 – 8 are rejected under 35 U.S.C. 103 as being unpatentable over Specialty Converters.
Specialty Converters teaches the features as recited above, but do not explicitly teach wherein the thermal energy supply comprises a radiation that acts differently through the pressure-resistant layer in different mutually delimited regions and/or in different cross-sectional planes of the wear layer and/or the functional layer of the surface element, so that the hollow microspheres are expanded differently in the different regions and/or different cross-sectional planes of the surface element or wherein the thermal energy supply comprises an electromagnetic radiation in an infrared spectrum that is adjusted so that at least individual regions and/or cross-sectional planes of the wear layer are heated, and the pressure-resistant layer is at least substantially penetrated by the electromagnetic radiation without being heated.
These features, however, are obvious in view of the teachings of the reference. The reference teaches the presence of infrared lamps (item 14 – figure 1) under which the sandwiched foam layer between cover sheet 13 and bottom sheet 11 is conveyed. Because the heat from the infrared lamps is in close proximity to surface of the foam composition, it is hotter at the surface, while the bottom of the foam composition sheet is left cooler as air flows past the surface of sheet 11 (page 2, lines 100 – 110). This heat produces two distinct areas in the foam composition sheet, such that the surface portion ends up with a denser, yet porous skin and the interior foam structure (figure 1 and 2; page 3, lines 1 – 20) is formed with a lower density. In addition, the pressure-resistant layer or cover sheet 13 is not heated, but heat merely passes therethrough to trigger the foaming reaction in sheet 10. Cover sheet 13 is then removed or stripped from the foam sheet, if desired (page 3, lines 15 – 30).
Therefore, based on these teachings, the examiner contends that it is obvious that the infrared energy source may be adjusted to effect a foaming reaction which causes the microspheres to expand differently in different regions or cross-sectional planes of the wear layer.
Response to Arguments
Applicant’s arguments, see page 4, filed September 15, 2025, with respect to the rejection of claims 9 – 10 under 35 USC 112 have been fully considered but are not persuasive. Applicant argues that claim 9 has been amended to correct the asserted issues; however, examiner disagrees. While claim 9 has been amended to include further layers (i.e, the functional layer and tensile member, respectively), the indefiniteness issue is still present as it is still unclear what the metes and bounds of the claim are with respect to the pressure-resistant layer. It appears as though it is intended to be on the flexible surface element at some point, but not in the end product. Examiner has maintained the rejection accordingly.
With respect to claim 4, applicant’s arguments are not persuasive and examiner has maintained the rejection of claim 4 under 35 USC 112 as noted above.
Applicant’s arguments with respect to the rejection of claims 9-10 over the reference of Hartman have been considered, but are not persuasive. While applicant has amended claim 9 to include the functional layer and tensile member, examiner contends that the layers 20 and 22 anticipate the newly-introduced layers. While applicant argues that the reference may fail to teach the inclusion of any tensile member, examiner notes that the instant specification and the claim do not limit or specify the composition of such a member and thus, the examiner contends that the layer(s) in Hartman, et al. anticipate the tensile member and functional layer as claimed.
Applicant’s arguments with respect to the rejection of claims 9 -10 over the reference of Gazaway, have likewise been considered and are persuasive. Gazaway only teaches the presence of a pressure-resistant porous layer and substrate or wear layer, but fail to teach or render obvious additional layers.
With respect to applicant’s arguments over the rejection of claims 1 – 8 as render obvious by Fu (US ‘246), examiner does find the arguments persuasive and thus, the rejection(s) have been withdrawn. Examiner concurs that the slip film of Fu is removed after expansion of the microspheres and thus, cannot limit the expansion of the microspheres.
In light of the arguments and an updated search (and the newly-submitted IDS), the examiner has rejected the claims over the prior art reference(s) of Traser, et al. and Specialty Converters as noted above. Because of the newly-applied reference of Traser, et al., the rejection is made NON-final.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARIA VERONICA EWALD whose telephone number is (571)272-8519. The examiner can normally be reached Mon-Fri ~9am-5:30pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Srilakshmi Kumar can be reached at 571-270-7769. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783
Prosecution Insights